Amendment of Patent Application
The Amendment of Patent application is one of the most essential features of patent prosecution. The Indian Patents Act provides for amendment of an application for a patent or a complete specification or any related document, at any time either before or after the grant of patent, if controller thinks fit and subject to certain conditions.
Provisions related to amendment of patent application
Sections 57 and 59 of the Indian Patents Act, 1970 talks about amendment of:
- An application for a patent
- Complete Specification or any related document thereto
The amendment can be made at any time before or after the grant of patent, if the controller so thinks fit and subjected to certain conditions. Further, Section 59 elaborates the conditions which are as follows, an amendment,
- Must only be done by the way of disclaimer, correction or explanation. Disclaimer means that removing something from the claim. It is basically done to limit the scope of claim. Correction is done to correct some obvious error and explanation is done to explain something in a better way without adding something new.
- Must be for incorporation of actual fact
- Will not be allowed if it describes matter not present in previously filed complete or provisional specification, or any claim of the amended specification does not fall wholly within the scope of a claims of the originally filed complete/provisional specification.
Amendments which can be made as per Section 57, 58 and 78 are as follows:
- Change in name, address, and address for service: Such document/information can be amended at any time during pendency of application as well as after grant.
- Complete Specification including claims, description, and priority date of a claim: Such information can be amended at any time during the pendency of the application so as to overcome Controller’s Objections; It can also be amended after grant or invalidation proceeding.
Section 78 empowers the Controller to correct any clerical error, which can be done by controller upon request by any interested person. Amendment under section 57 and 58 can be sought by the applicant or patentee whereas the amendment under section 78 can be made out by any interested person.
- Filing date can be amended as per section 17 of the Indian Patents Act, 1970 at any time after filing of application and before grant of the patent. Section 17 can be invoked in case the Controller requires that amendments be made to the specification.
Case Laws in respect of amendment of Patent Application:
- In Press Metal Corporation Ltd. v. Noshir Sorabunderji Pochkannawalla, it was held that Section 78 empowers the controller to correct clerical errors, it does not empower the Controller to make amendments suo-moto. Hence, amendments have to be necessarily be made under section 57.
- In another case, Aia Engineering Ltd. v. Controller of Patents, the High Court of Delhi drew a distinction between section 78 and section 57. It was held that Section 78 deals power of controller to correct clerical errors whereas section 57 deals with request for amendment of an application made by a patentee.
- In another case, Nippon A&l Inc. v. Controller of Patents the High Court of Delhi held that if the applicant is amending his claim from ‘product by process’ claim to ‘process’ claim, then he is narrowing down his claim. If he is not adding something new which is not already mentioned in the original specification then the amendment is allowed.
Role of Patent attorney
Patent attorneys are professionals who are duly recognized and registered with Indian patent office for representing their clients before the patent office. Amendment of patent application is a complex procedure and if not done properly it can get dismissed. As a Patent attorney has a lot of experience in these matters he knows how and what to amend to not get an objection from the patent office. He also knows how to defend it in case the need arises.